Questions & Answers

About Wynne-Jones IP

Why choose Wynne-Jones IP?

Intellectual Property (IP) is too important not to be done properly

The value of a business can be transformed by obtaining strong IP rights. IP rights are assets, which can be licenced and sold. Additionally, strong IP rights can be used to stop others from using your intellectual property for free.

To ensure that your Intellectual Property assets are fully protected, you need the right partner.

We pride ourselves on delivering a high-quality IP service. If you choose us, you can be assured of the following:

Quality

We deliver expert IP services and consultancy to a high professional standard. This ensures robust and wide-ranging protection of your IP assets, all at a competitive cost.

Flexibility and responsiveness

We will work pro-actively with you, working alongside you as your IP partner. We do not hold a ‘one size fits all’ philosophy; instead we fully tailor our advice to your unique needs.

Trust and security

We work mindfully and harmoniously with you, taking care to be sensitive to any strategic or budgeting constraints you may have. You can be secure in the knowledge that we are acting in your best interests at all times.

Clarity, reliability and timeliness

We aim to be approachable and available to you, communicating even complex issues clearly, with as little jargon as possible. We will be clear about what is happening and why. We believe you will be very pleased with both the speed and the consistently high quality of the work that we do for you.

All our attorneys hold qualifications awarded by the official UK and European bodies for IP attorneys and continue to meet the relevant Continuing Professional Development standards. Our UK patent attorneys are members of CIPA; our European patent attorneys are members of the EPI; our UK TM attorneys members of CITMA, and our EU TM and/or design attorneys are registered with OHIM. Further, our firm is regulated by the official UK regulatory body, IPREG. Membership of these bodies automatically conveys a strict duty of confidentiality on our attorneys. Further, all employees and relevant contractors are also bound by confidentiality requirements.

We pride ourselves on our client care standards and are one of the few firms of UK IP attorneys who carry out independent client service reviews and apply Key Account Management principles. In the unlikely event of client dissatisfaction, we have a formal complaints procedure and offer the security of professional indemnity insurance from the industry-standard provider, PAMIA.

We have high security standards and our IT systems have state-of-the-art firewall and anti-virus protection.

How does Wynne-Jones IP work with clients?

We always choose the most appropriate working arrangement for each client following discussions and select the attorney(s) with the best match in terms of legal and technical experience for your needs.

For larger clients, we can offer a team of specialised attorneys, including multi-disciplinary technical/legal expertise teams if required.

We constantly review our client relationships to ensure that our high level of service is maintained.

What is the history of the firm?

The firm started life in Cheltenham in 1964 as the one man-practice of John Wynne-Jones, who previously worked as a patent attorney at other IP firms in the UK as well as in Chicago, USA. Early success led to him taking over the practice of a retiring patent attorney in Cardiff, establishing our first office in that city.

Over the next few years, business grew sufficiently for John to take on other attorneys, two of whom, Simon Lainé and Michael James, went on to become partners and the firm became known as Wynne-Jones, Lainé & James in the mid-1970s. There followed a period of steady growth and John Wynne-Jones eventually retired in 1989, leaving behind a thriving firm with a very sound base of clients and personnel.

Thereafter, the firm continued to progress and modernise, converting from a traditional UK partnership structure to a Limited Liability Practice in 2008. We are still growing and in 2012 re-branded the firm as Wynne-Jones IP.

How does the firm calculate its charges?

We charge based on a combination of competitive hourly rates and fixed service charges for certain operations, such as filing a patent or registered trade mark application.

Clear, up-front estimates can be provided on request and we always work to give you the best value from your IP budget.

Some of our service charges are discounted for start-up companies and individuals.

Do I need a secrecy/non-disclosure agreement for discussions with Wynne- Jones IP?

No. We’re a regulated firm of IP attorneys and our membership of official bodies means that we are automatically bound by strict client-adviser confidentiality rules.

Further, several of our patent attorneys are amongst the small number of UK IP practitioner's who are capable of handling work under Section 22 (Information prejudicial to the safety of the realm or safety of the public) of the UK Patents Act.

Please also see our answer regarding professional credentials.

New to IP?

I’ve devised a new invention/product – what should I do next?

If you want to protect your creation then it’s a good idea to first check if it’s new because this will affect the type, and scope, of IP protection available.

We offer professional searches for this purpose, but it can be useful to do some initial searching of your own, including general WWW searching using Google or other search engine, looking at the catalogues of manufacturers of similar items and so on. Another suggestion is to search patent documents, which describe ideas that may not be available elsewhere. The Espacenet database offers free keyword-based searching of international patent documents:

If you don’t find anything identical then we’d suggest you keep a record of the closest existing idea/product you find because this will be a good starting point for our discussion regarding how best to protect your creation.

There’s also the question of whether you’d be at risk of infringing others’ existing IP rights by commercialising your idea/product. This is an even more complex issue and we’d strongly recommend that you get professional assistance. However, it will be useful if you can gather some preliminary information, such as details of the main potential competitors, any similar products with “patented” or “patent pending” warnings on them of which you’re aware, and so on.

I’ve come up with a new name for my company/product – what should I do next?

Our general advice is to check to see if someone else already has the same, or similar, name already registered as a trade mark. If they do then you could be at risk of infringing their rights and may need to re-think.

A good starting point for this type of search is the UK IP Office’s registered trade mark database:

However, it’s important to note that whilst this database does provide some “wildcard” searching, it should be used as an initial investigation only to identify potential risks; for instance, it doesn’t offer full searching of phonetically-similar marks, which our professional clearance searches do.

Further, even if you do find an existing trade mark that appears, on the face of it, to be problematic then we’d always recommend that you obtain a qualified trade mark attorney’s opinion because there are many factors that determine the actual coverage of trade mark rights – it might not be as bad as it first looks!

Should I seek professional advice?

Intellectual Property law is undoubtedly a complex subject and even us specialist attorneys find it a constant learning process!

Whilst much useful background information on IP is available online such as the UK IP Office’s basic IP guide, it’s no surprise that we, as well as independent bodies, such as the IP Office, strongly recommend that you consult a qualified attorney in order to gain a full understanding and get advice that is relevant to your needs. We’re happy to offer free initial consultations with no time restrictions (at our discretion) so that we can fully discuss how we can help you and answer your questions.

Brexit: Everything you need to know on IP

What is the immediate effect of Brexit on IP?

Currently, the UK is still in the EU. The process of leaving is set out in Article 50 of the Treaty of Rome. Article 50 allows two years for the UK and the EU to agree “divorce” terms from the date it is invoked, and this has not yet been done. The UK Government intends to invoke Article 50 by the end of March 2017, but even this may be ambitious. Most people believe the process will take the full two years and maybe longer. (Article 50 allows for the two year process to be extended, by agreement).

Which areas of IP are most likely to be affected?

Trade marks may be affected and registered designs will be. Following Brexit, the UK will no longer be an EU member state. This means it will no longer be part of the Community design registration system and only part of the EU trade mark registration system if the UK remains in the EEA (European Economic Area). The government is considering various options to ensure that Community registered designs and EU registered trade marks remain protected in the UK after Brexit, but exactly how this will be done will not become clear until article 50 negotiations are complete.

Which areas, if any, will remain unaffected?

The European patent system remains unchanged, as the legislation is independent of the requirement of being in the EU. That is to say, the filings and processing of European patent applications is completely unchanged. Patents filed under the Patent Cooperation Treaty (PCT), which is an international patent law treaty, are also unaffected.

What will be the short term effects of Brexit?

There will be numerous short term effects, but here are a few of the most obvious.

Firstly, owing to the uncertainty of what happens to Community designs and EU trade marks after Brexit, there has been, and will continue to be, an increase in UK design and trade mark filings. In fact, the UK IPO is experiencing record numbers of filings. There are two reasons for this:

Many businesses have decided to completely refile their EU trade mark portfolios at the UK IPO, and thereby take control of the situation and remove the uncertainty. (The same can only be done with Community designs filed within the last six months because older ones will not be considered novel if filed nationally in the UK).

When it comes to new designs and trade marks, businesses wanting to protect their designs and trade marks throughout the whole EU are increasingly doubling up by filing in the UK as well as in the EU.

A second area of uncertainty will be with Agreements, like trade mark co-existence agreements, licences and consents. Will Agreements that define the territory as the “European Union” cover the EU after Brexit (because the territory should be interpreted as the EU “at the time” the Agreement was entered into) or not (because the territory should be interpreted as the EU “from time to time”)? We are advising our clients to undertake (or instruct us to undertake) a review of all their Agreements to identify potential problems like these and consider pre-emptive action to address them.

A third area of uncertainty is in relation to non-use. In the UK and the EU, a trade mark that has not been used in the last five years may be revoked. The question is what is the position after Brexit of an EU trade mark that has only been used in the UK. Will such an EU trade mark be revocable immediately in the EU after it ceases to cover the UK, or only after five years? Also, what will be the position of an EU trade mark that has only been used outside of the EU? Will it be immediately revocable in the UK?

Another issue will be what will happen to ongoing EU trade mark oppositions, invalidations and revocations. There are significant differences between such contentious proceedings at the EU IPO and the UK IPO. Will it be possible to divide EU oppositions, invalidations and revocations into separate EU and UK ones, or will it be necessary to file new proceedings in the UK? (And will there be any cases where this will be prejudicial on one or other party?)

Finally (for now), there is a possible loss of rights with unregistered design rights. Unregistered design rights in the UK are limited to features of shape and configuration, where EU ones include colours, ornamentation, textures and surface decoration. Although surface decoration may be protected under UK copyright law, anyone relying on EU unregistered design rights is likely to find that, overall, they have less protection in the UK after Brexit than before. Again, it would be advisable to review any designs that might be affected.

What does Brexit mean for Gibraltar?

In March 2018, we attended the Marques mid-year meeting in Malaga. Malaga is in south-west Spain, quite close to Gibraltar, and the local newspaper ran a story about Gibraltar and Brexit. This got us thinking about the IP issues of Brexit on Gibraltar and the British crown dependencies of Jersey, Guernsey and the Isle of Man.

The EU’s draft Brexit guidelines gave Spain an effective veto over Gibraltar by stating that no deal on the EU’s future relationship with the UK would apply to Gibraltar without Spain’s agreement. Despite Gibraltar voting 96% to remain in the EU on 23 June 2016, this interference in its affairs has caused a backlash among Gibraltarians who, in the main, want to remain British.

This got us thinking about the IP issues of Brexit on Gibraltar and the British crown dependencies of Jersey, Guernsey and the Isle of Man. We know, of course, that the UK will eventually be leaving the EU and that registered and unregistered Community Designs and EU Trade Marks will no longer have aﬀect in the UK, but what will this mean for these territories?

With Guernsey and the Isle of Man, Brexit should have no effect on the protection of trade marks and designs. Currently, in Guernsey, neither EU nor International trade marks are recognised and the only option is to apply to register a trade mark that is also registered in a country party to the Paris Convention – usually a UK trade mark. Brexit will not change this. In the Isle of Man, UK trade marks and UK designations of International trade marks automatically give protection, and, although the Isle of Man is technically outside the EU (just to complicate matters…), EU trade marks are also recognised and protected there. Therefore, here again, rights in the Isle of Man should be unaffected by Brexit. In both territories, the position is the same for designs.

With Gibraltar and Jersey, however, things are different. Currently, EU trade marks give protection, but it seems unlikely they will do so after Brexit, and, although UK trade marks may be derived from them, UK trade marks only give protection in Gibraltar and Jersey if they are pro-actively registered there. Therefore, it looks as if trade mark owners wishing to retain rights in Gibraltar and Jersey will have to make sure they have UK protection and then make applications to register their UK trade mark(s) in these territories. With designs, the position in Jersey is the same as with trade marks (i.e . pro-active registration of a design already registered in the UK is required). In Gibraltar, however, UK designs automatically cover Gibraltar, so providing Community designs are converted to UK designs after Brexit, there is nothing to worry about. Phew…..

Patents

What is a patent?

A patent is a bargain with the state whereby, in return for publishing the particulars of your invention, you are granted a monopoly right to the invention that entitles you to exclude others from using the invention. If you have a granted patent you can enforce your rights to stop others from using your invention, or license the right to enable another party to validly use the invention covered by the patent in return for royalties.

If I obtain a granted patent in the UK do I get any protection overseas?

All IP rights, including patents, are territorial in nature, so if you obtain a granted patent in the UK this gives you exclusive rights in the UK only. If you wish to protect your invention in other territories, then you need to seek seperate protection in these territories. Fortunately, if you are interested in protecting your rights in several countries in Europe there is a single system for processing the application, whereby at the end of the process you 'validate' the granted patent in your chosen countries enabling you to enforce your rights in those European countries. There is also an international patent application (also known as a PCT application) procedure which enables you to protect the invention in a number of territories worldwide. The PCT application is a holding application which defers the time for deciding upon those territories in which you may wish to pursue patent protection. Presently, the PCT application covers 148 countries and at the end of the holding period, namely the international phase, you can then decide to pursue national/regional patent applications in any of the countries covered by the PCT application. The procedure relating to the national/regional patent applications will then continue in these selected countries according to the respective national/regional laws.

How long does it take to get a granted patent in the UK?

Usually the application process must be completed within 4 1/2 years from filing. Normally prosecution of the application through to grant takes 2 1/2 - 4 years and is dependent upon any objections being raised at the examination stage. Accelerated prosecution is available upon request in certain circumstances whereby the patent may be granted within a year. Accelerated prosecution is also available for inventions which have an environmentally friendly benefit.

How long do rights last in the UK?

The duration of a patent is 20 years from filing the patent application. Renewal fees must be paid for years 5 to 20 to keep the patent in force. A supplementary protection certificate can extend the protection of medicinal products or plant protection by a further 5 years.

Can I register anything I want?

Needless to say, there are restrictions as it would not be fair to obtain a monopoly in some circumstances. A patent is intended to protect the technical features of your invention and there are certain exemptions that exist, for example business methods, aesthetic creations and mathematic algorithms are all excluded from being patentable. A software patent may only be patentable if the software creates a real world technical effect, e.g. makes a production line work more efficiently. In this case it is usually the process carried out by the software that is protected.

I've been talking about my invention, can I still seek patent protection for it?

One of the criteria for patentability is that the invention is novel and therefore there can be no evidence that the invention is in the public domain prior to the filing date of your application. Unfortunately, this includes you talking to friends and family about the invention. Therefore, it is important that you do not discuss your invention, and in particular the technical information associated with your invention, in a social setting as you may jeopardise the ability to obtain a patent for the invention.

If you are required to discuss your invention with a potential manufacturer or distributor you must do so under a non-disclosure agreement. However it is always advised that, if possible, you ensure a patent application is filed with the UKIPO prior to any commercial negotiations relating to the product taking place.

What is Patent Box?

The UK Government has introduced legislation called the “Patent Box” that reduces the rate of UK Corporation Tax payable on profits made on patents, the sale of patented products and even the sale of products incorporating a patented component, amongst other patent-related profits. The reduced tax rate will eventually be as low as 10%.

The Patent Box complements existing tax incentives for Research and Development, and applies to worldwide patent-related profits earned after 1st April 2013. This is a pretty liberal provision; for instance, even if your product is only covered by a UK or European (EPO) patent then worldwide sales of the product will qualify for the reduced tax rate.

The scheme also applies to certain other types of Intellectual Property, such as rights covering data exclusivity, pharmaceuticals and plant breeds, as well as national patents granted in certain European countries. It should be noted, however, that it does not apply to registered trade marks or designs.

Do Wynne-Jones IP offer Patent Box consultations?

Wynne-Jones IP can advise on patent filing and exploitation strategies based on your current and future products/projects and we’re experts in obtaining patents in the UK and abroad. The sooner your patent is granted, the sooner you can gain the full relief available and in many cases we can accelerate grant of your patent.

If needed, we will work in conjunction with your accountants/tax advisers to ensure that your exploitation of patents is properly recorded, helping you gain the maximum tax reduction to which you’re entitled.

The Patent Box scheme is generally considered to be wide-ranging and generous; profits stemming from many different types of income streams associated with the use of the patented technology can qualify for the tax reduction.

To obtain the benefits of the scheme, it must be actively claimed in a tax return. The precise calculation of the tax reduction and qualifying rules are complicated and specialist tax advice is strongly recommended – Wynne-Jones IP can recommend, and collaborate with, experts in the field upon request.

You do not necessarily have to create a completely new product in order to obtain a patent that can be exploited for Patent Box purposes. For instance, it could be a replacement part or an add-on which is patentable. Profits relating to patented technology you’ve exclusively licensed in, or licensed out, can also qualify.

Trade Marks

What is a trade mark?

A trade mark is simply the legally protectable part of a brand. The legal system tries to keep up with modern perceptions of brand, and so as well as names and logos, it is possible to protect 3D shapes, sounds, smells, colour combinations, slogans - even the layout of a shop.

I have my company name and domain name registered - are these enough?

Company names, domain names and trade marks are all seperate and perform different functions, but a trade mark is the strongest of name rights as registration provides an exclusive monopoly right that you can use to prevent the use of the same or a confusingly similar name, whether as a brand, company name or domain name. Trade marks truly are the king of name rights. Company names and domain names provide no real rights to stop others from using a name.

Do I have to own a trade mark registration for my brand?

Registration as a trade mark is not compulsory to use your brand in the marketplace, but is strongly advisable. What would you do if a competitor copied your brand and as a result took business from you? What would you do if your brand and products were targeted by counterfeiters? A registration provides a deterrent, as the details of your ownership appear on a public searchable record. Should there be an issue in the future they provide you with a strong right upon which to base any legal action.

If I register my trade mark in the UK do I get any protection overseas?

Trade mark rights are territorial in nature, so if you register your trade mark in the UK this only gives you these exclusive rights in the UK. If you wish to protect your trade mark in other countries you need to seek seperate protection. Fortunately, if it is the EU that you are interested in, there is a single system for obtaining protection to cover the whole of the EU, which makes the process simpler and more cost efficient.

Do rights last forever?

A trade mark registration has the potential to last forever. In the UK, trade mark number 1 obtained on 1 January 1876 is still in force. However it is necessary to pay renewal fees every 10 years and if you don't use your trade mark for a period of 5 years or more, it is possible for someone to cancel your registration. After all, why should you have an exclusive monopoly and not take advantage of it?

Can I register anything I want?

Needless to say there are restrictions as it would not be just for someone to obtain an exclusive monopoly unfairly. For this reason, if your trade mark is descriptive of your product or service, or is a generic term, you cannot simply register it. Similarly, if your trade mark is potentially deceptive, it cannot be registered.

If I want to launch a new brand, should I look before I leap?

The simple answer to this is yes. Research your brand. Use your industry knowledge. Have register searches undertaken. If you do this early enough in the brand development process, you have sufficient time to change your plans without incurring too much cost, and you could save yourself the embarrassment, and cost, of having to withdraw a product following launch.

Designs

What do we mean by design?

In intellectual property (IP) terms a design is any product design - commercial, industrial, technical - that has new features of visual appearance, whether they are from shape, contours, lines, colours, ornamentation or texture. Protection is given to the way the product, or a part of the product, looks.

Do I have to register my product design?

There is no compulsory requirement to register your product design, and both UK and EU law recognise certain unregistered designrights. However, by obtaining a registration the existence of your design is placed on a public register, thereby providing a searchable record for third parties. Having a registration will also enable you to identify the existence of your rights on your product. Both of these can provide a useful deterrent against copying. Furthermore, the UK has just introduced criminal sanctions against the copying of designs, providing further teeth to this useful right.

If I register my design in the UK do I get any protection overseas?

All IP rights, including designs, are territorial in nature, so if you register your design in the UK this gives you exclusive rights in the UK only. If you wish to protect your design in other countries you need to seek separate protection. Fortunately, if it is the EU you are interested in there is a single system for obtaining protection to cover the whole of the EU, which makes the process simpler and more cost efficient.

Can I see how sales go before I register my design?

In the UK and EU there are provisions for a 12 month “grace period” to allow you time to see how sales go before incurring the cost of obtaining registered protection. However this does not generally apply outside of the EU. So if you launch your product ahead ofstarting the registration process here, you will not generally be eligible for protection outside of the EU, and only in the EU if you act quickly in the first 12 months.

How long do rights last?

In the UK and EU registered design rights will last for a maximum of 25 years, with renewal fees payable every 5 years. The duration of rights vary in other countries around the world.

Can I register anything I want?

Needless to say, there are restrictions as it would not be fair to obtain a monopoly in some circumstances. Excluded are designs that are not new or don’t really differ from existing designs, material that is offensive or contains certain protected flags and internationalemblems, designs dictated solely by the product function, or features that have to have a specific design to fit an existing product (such as spare parts).

Isn’t my product design covered by copyright?

Whilst the design drawings themselves will be subject to copyright, producing articles to design drawings is not an infringement of copyright (there are special rules relating to “artistic works”). There may be unregistered rights which exist in the design, but it isnecessary to demonstrate copying and overall the rights are generally more limited than with registered designs.

Copyright

What is copyright?

Copyright is an automatic right that exists at the point of creation, and can apply to original literary, dramatic, musical and artistic works, sound recordings, films, broadcasts, software and the typographical arrangement of published editions.

Do I register my copyright?

There is no official system to register copyright in the UK as this is an automatic right. It is however important to keep clear documentary evidence to demonstrate when the work was created and by whom as this will be needed if you ever need to enforce your rights.

Why is copyright relevant to my business?

Every business uses material in which copyright exists. Your logo, website and marketing material for example will all have copyright associated with them, as will many other documents produced within your business.

If they are for my business do I own them?

Not necessarily, and this is a common issue. If you comission a third party to produce material or designs for you, then unless a written agreement states otherwise they own the copyright. This is commonplace with items such as photographs, website and marketing material layout and content, brand design, etc. Whilst this may not present an immediate issue, it can cause problems later if your commerical relationship with the provider breaks down, or you need to take action against soemone who has copied material. It is therefore advisable to ensure that you have written agreements with such third parties to ensure that the copyright belongs to your business.

How long do rights last?

Copyright has a potentially very long life as the standard duration is the life of the author/creator plus 70 years.

Can I use material that others put on the internet?

No. Just because something has been placed in the public domain it does not mean that it is free for use. If you use such material without the consent of the owner they may be able to sue you for copyright infringement.

Is my product design covered by copyright?

Whilst the design drawings themselves will be subject to copyright, producing articles to design drawings is not an infringement of copyright (although there are special rules relating to "artisic works"). It is recommended that product designs are protected by a registered design.

Is my copyright protected overseas in the same way?

The UK belongs to a number of international conventions that mean in many overseas countries your copyright will be given the same automatic protection as it is entitled to in the UK. The main international convention governing copyright protection is called the Berne Convention.

Funding

What funding options are available to me?

Download your useful guide to all available funding and investment opportunities here.

Information for Start-Up businesses

How can Wynne-Jones IP help me?

It’s not an overstatement to say that getting the right IP advice in the early days of a business venture can mean the difference between success and failure.

If your core idea or product is not properly protected then it’s likely that there’s nothing you can do to prevent another company copying it. You could lose your market position, regardless of whether you were the first to create or commercialise.

Similar problems can arise with company or product names. Having a company name registered at Companies House and/or as a domain name won’t necessarily enable you to stop a competitor from using the same, or very similar, brand name and take advantage of the reputation you’re building up.

There’s also the question of whether you infringe another company’s IP rights. Even if you came up with your idea, product or brand name completely independently, this doesn’t mean you can avoid being sued for infringement of many types of IP rights if you fall within their scope.

Wynne-Jones IP offer a free, structured consultation for start-up ventures. Whether you’re already up and running, or still at the drawing board stage, we will give full consideration to the forms of IP protection that are right for you and how you can use them to maximise your chances of commercial success.

Topics covered can include how to protect your (current and future) concepts, products and brand names; investigating potential infringement risks, and licensing and other commercial negotiations involving IP.

We also discount some of our service charges for start-ups and individuals.

To arrange your free, initial consultation with us please get in touch

Information for Universities and Technology Transfer Departments

How can Wynne-Jones IP help me?

Wynne-Jones IP has a deep understanding of university culture and processes, and also of working with academics. We are especially experienced in providing IP advice to universities and spin-out companies. We work directly for a number of UK universities and indirectly for many overseas universities. We also work for specialist technology transfer companies.

We believe that our combination of high-quality work and practical advice, all at reasonable cost, is a good fit with universities and technology transfer departments and companies. Our attorneys understand the particular and often difficult demands made of technology transfer officers, and know how to make their life easier through being pro-active and providing succinct advice. We are very interested in assisting by providing advice on patent strategy, portfolio management and budgeting. Our attorneys regularly provide talks and lectures on IP at universities.